In the recent Finjan v. Secure Computing decision, the Federal Circuit affirmed that software that is sold in locked or inactivated form can directly infringe apparatus claims even before the customer unlocks or activates the software in separate subsequent steps.
The patents at issue in Finjan concern software for computer security (anti-virus, anti-spyware, etc.). Finjan, a computer security software company, asserted three patents against its competitors Secure Computing Corp., Cyberguard Corp., and Webwasher AG. Each asserted patent contains both method claims and apparatus claims. Among various other issues related to damages and infringement of method claims, the defendants also appealed the district court’s finding of direct infringement of apparatus claims.
Secure Computing argued that they did not directly infringe the apparatus claims because the software they sold to customers was “locked,” meaning that none of the infringing features were functional until the customers “purchased keys and unlocked” the software components. In other words, the defendants’ arguments would imply that the customers were the direct infringers, and the defendants were indirect infringers. And as a result, “Finjan’s failure to allege indirect or joint infringement is fatal.”
The appellant-defendants cited Southwest Software, inc. v. Harlequin Inc. 226 F. 3d 1280 (Fed. Cir. 2000) for the proposition that “locked [computer] code” cannot infringe. The Federal Circuit disagreed, pointing out that the claims at issue in Southwest were method claims whereas the claims here were apparatus claims. Because infringement of a method claim requires “performance of each claimed step,” a locked piece of software such as in Southwest necessarily cannot infringe. But here, an apparatus claim merely requires “literal” presence of the software or binary code in the accused product in order for infringement to occur.
The Federal Circuit relied on Fantasy Sports Props. V. Sportsline.com Inc. 287 F.3d 1108 (Fed. Cir. 2002). Fantasy Sports concerns an apparatus claim reciting a “computer for playing football.” The accused infringer sold software that contained features which the user could configure for playing fantasy football. The defendant argued that direct infringement did not occur when the software was sold to customers because the customers had to configure and activate features in the software to play football on the computer. The Federal Circuit disagreed and stated that the software “was written in such a way as to enable a user of that software to utilize the function . . . without having to modify that code.” The court held that inactive software features are “already present in the underlying software” and therefore could infringe an apparatus claim for a “computer for playing football.”
The Federal Circuit affirmed the district court’s finding of direct infringement of apparatus claims. The court emphasized the importance of case-by-case analysis of the specific “language of the claims, as well as the nature of the accused product” in determining whether infringement occurred. Here, Finjan’s asserted apparatus claims do not describe “active” or “enabled” software or software components. Rather, these claims recite purposes and capabilities of software components without requiring that a user actively makes use of or has the actual ability to use such allegedly infringing software components.
 In Southwest, the Federal Circuit “affirmed denial of a new trial on infringement, after a verdict of non-infringement, because the evidence showed that the accused software product ‘included a manual step which avoided the automatic selection feature of the patented invention even though the code for automatic selection remained in place.’”
 i.e. features that require user activation or configuration to become functional.